Senior Patent Prosecution Paralegal

Perkins Coie•San Diego, CA

7d•$72,320 - $207,700•Hybrid

About The Position

Perkins Coie LLP’s nationally recognized Intellectual Property group is seeking a highly motivated Patent Prosecution Paralegal to join our team. This position will assist throughout the firm with coordinating and supporting all phases of U.S. and international patent prosecution matters. The individual in this role must possess experience and understanding of all aspects of U.S., Patent Cooperation Treaty (PCT), and foreign patent prosecution case support including preparing and filing patent applications and prosecution documents via the electronic filing systems, data collection and review, and utilizing document/information management databases. The applicant must demonstrate the ability to conduct legal research and complex factual investigations. ESSENTIAL FUNCTIONS The following essential functions are primary job duties that incumbents must be able to perform unassisted or with some reasonable accommodation.

Requirements

Thorough knowledge of all phases of U.S. and PCT patent prosecution processes, procedures, databases, and filing systems.
Familiarity with international procedures, corresponding with foreign associates, and managing foreign deadlines.
Possession of superb organizational, analytical, and communication skills.
Ability to establish effective working relationships with the firm’s lawyers and business professionals, clients, and other professionals.
Ability to handle multiple assignments, ability to work well under pressure, and the flexibility to assist the team in meeting client demands on accelerated schedules.
Possession of basic computer skills including Word, Excel, PowerPoint, Acrobat, and Outlook.
10+ years of recent experience working as a patent prosecution secretary or paralegal in a law firm or in-house legal department or equivalent is required.

Nice To Haves

A paralegal certificate or bachelor’s degree is a strong plus.

Responsibilities

Prepare and file patent and design applications and prosecution documents via the United States Patent and Trademark Office (USPTO) Patent Center.
Prepare and file PCT applications via ePCT and the USPTO Receiving Office.
Manage Information Disclosure Statements (IDS), including reviewing prior art, and preparing and filing submissions with the USPTO.
Communicate with clients, government agencies/officials, foreign agents, consultants, and other parties regularly to collect and assemble information.
Communicate findings to the appropriate parties.
Manage a docket and track deadlines on a secondary docket.
Monitor and follow up with the appropriate parties on action items and filing deadlines.
Manage client portfolios including preparing and maintaining status reports and prior art charts.
Maintain current knowledge of U.S. and PCT rules as they relate to the Patent Prosecution practice.
Assist with client transfers including review of the chain of title, submission of Revocation and Substitute Power of Attorney documents to the USPTO, and preparation and review of electronic file history.